Delhi High Court Temporarily Restrains Use Of 'Godfather' Mark For The Glenwalk Whisky Endorsed By Sanjay Dutt

The Delhi High Court has temporarily restrained the makers of The Glenwalk whisky from using the mark "GODFATHER" for their proposed whisky product endorsed by actor Sanjay Dutt.

The court held that the prominent use of the word was deceptively similar to the long-standing trademark owned by Devans Modern Breweries.

Justice Tushar Rao Gedela passed the interim order. He directed Cartel Bros. Pvt. Ltd. to immediately remove advertisements, listings and social media content carrying the mark "GODFATHER" or "GODFATHER'S" in relation to whiskey and other alcoholic beverages.

"The essential and prominent feature of the defendant's mark is deceptively similar to that of the plaintiff," the court observed.

Devans Modern Breweries, which manufactures Godfather beer, moved the court after coming across a Facebook post announcing the launch of a whiskey product under the Godfather name. The company stated that it adopted the trademark "GODFATHER" for beer in 1984. It also holds registrations for alcoholic beverages, including whisky and rum.

During the hearing, Cartel Bros informed the court that it had revised its proposed branding. The label was changed from "THE GODFATHER" to "THE GLENWALK GODFATHER'S BY SANJAY DUTT."

The company also stated that it was willing to withdraw its standalone application for "THE GODFATHER". It sought permission to continue using the revised composite mark.

The whisky maker argued that the revised branding had to be assessed as a whole. It contended that the dominant source identifier was Sanjay Dutt rather than the word "GODFATHER". It also argued that Devans had not used the Godfather mark for whisky for several years.

The court was not persuaded. It ruled that non-use by itself does not deprive a registered proprietor of trademark protection. It noted that Devans' registrations for the mark in relation to alcoholic beverages remained valid and enforceable.

"Mere non-use of a mark without being validly rectified under the provisions of the Act, cannot be deemed to disentitle a registered proprietor from enforcing all and any rights conferred upon it," the court held.

The court also rejected the contention that beer and whisky could not be treated as related products. While acknowledging differences in price and consumer preference, it found those factors were not determinative.

The court observed that both products are alcoholic beverages. They are sold through common trade channels and are governed by the same regulatory framework.

"Beer and whisky would be allied and cognate products," the court ruled.

On the argument that the revised Glenwalk label was a composite mark, the court held that the anti-dissection principle did not assist Cartel Bros in the present case. It found that the words "GODFATHER" and "GODFATHER'S" remained prominent despite the addition of other elements, including Sanjay Dutt's name.

The court further found a likelihood of consumer association between the rival products.

"When a general consumer with average intelligence and imperfect recollection perceives the products of the defendant, even though the product may not be identical, however, is likely to believe that the product is somehow associated with or emanates from the plaintiff," it observed.

Holding that the requirements for trademark dilution and unfair advantage were prima facie satisfied, the court granted an interim injunction.

It restrained Cartel Bros from manufacturing, bottling, marketing, selling, advertising or exporting whisky under the marks "GODFATHER", "GODFATHER'S" or any deceptively similar variation until further orders.